Any State party to this Treaty shall be obliged, subject to Articles 2 and 3, to refuse or to invalidate the registration as a mark and to prohibit by appropriate measures the use, as a mark or other sign, for commercial purposes, of any sign consisting of or containing the Olympic symbol, as defined in the Charter of the International Olympic Committee, except with the authorization of the International Olympic Committee. The said definition and the graphic representation of the said symbol are reproduced in the Annex.

According to an article by Kevin E. Flynn, in LocalTechWire.com, "While only 12 percent of the patents that go into reexamination are totally eradicated, another 58 percent of the patents that go into reexamination end up reduced in scope. Thus, 7 out of 10 reexaminations result in at least some reduction in patent scope. Keep in mind that these percentages include situations where the patent owner requested the reexamination to clean up a minor issue hanging over the patent, so the percentages may be more dramatic when limited to reexaminations initiated by third parties."

US-AUS FTA Stalled Over Intellectual Property Issues

According to an October 28, 2004 article in IP Law Bulletin, "Lingering disagreements over intellectual property issues are likely to stall the implementation of the free-trade agreement between Australia and the U.S., originally set to come into effect in January."

US officials have reportedly expressed concerns over Australia's price protections on pharmaceuticals. The Australian Parliament is proposing fines against US pharmaceutical companies that keep cheap generic drugs from entering the Australian market. Other issues raised by the proposed Agreement include

Archived
updates for Thursday, October 28, 2004

According to an August 2004 paper by R. Polk Wagner and Gideon Parchomovsky, the benefits of patent portfolios are so significant that firms' patenting decisions are essentially unrelated to the expected value of individual patents. Because patent portfolios simultaneously increase both the scale and the diversity of available marketplace protections for innovations, firms will typically seek to obtain a large quantity of related patents, rather than evaluating their actual worth. The result - which they see as widely-recognized in commercial circles - is that the modern patenting environment exhibits (and requires) a high-volume, portfolio-based approach that is at odds with scholars' traditional assumptions.

According to BRIDGES Weekly Trade News Digest, Intellectual Property Watch is recruiting an Associate Director to assist the Director in writing and editing articles for the IP-Watch newsletter and coordinating its translation and distribution, as well as to provide administrative support. They are looking for a candidate with a graduate degree (or equivalent) in international relations, development studies, international law, or public policy; extensive prior experience in writing and publishing; experience with IT-tools and knowledge of graphic/web design and maintenance. English is essential, French and Spanish strong assets. Applications, including a CV and a writing sample, should be emailed by 14 November to info@ip-watch.org.

According to the IP-Watch website, the position is actually for an Associate Editor, in Geneva, Switzerland, paying CHF 7200 - 7800 monthly depending on experience.

Archived
updates for Wednesday, October 27, 2004

This final rule amends the Copyright Office regulations governing recording by the Library of Congress of unpublished transmission programs that have been fixed in a tangible medium of expression. Under the final rule, the Library may make a recording of unpublished radio, television, satellite, cable, and Internet transmission programs that have been fixed prior to or simultaneously with transmission. The copyright owner may then use the Library's recorded copy or phonorecord to satisfy the deposit requirement to register a copyright claim in the transmission program. The final rule also requires the Motion Picture, Broadcasting, and Recorded Sound Division to post on its website a list of transmission programs that it has recorded pursuant to this regulation.

Date: October 27, 2004
Time: 12:30 PM Eastern
Duration: 1 Hour
Please RSVP to info@aplf.org in order to obtain toll free dial in number.
There is No charge to participate

Trademark Management Strategy is relevant and important to both legal and marketing executives in any commercially active corporation. The effective use and protection by the owner is sometimes not fully appreciated outside of the legal department. This presentation will provide guidance as how to choose a mark and how to start protecting it from the moment it is selected, including

According to an article by Diane Duhaime and Elizabeth Pasquine, "Although there is no requirement under U.S. law that a company first conduct a trademark search, trademark counsel will normally recommend one because the expenses associated with defending a lawsuit [and/or changing the mark] will almost always far exceed the expenses of clearing and obtaining U.S. registration of the mark." If the mark will be used in the U.S. only, the first type of search conducted is normally a preliminary, online search of the U.S. Trademark Register. This preliminary search is fast, inexpensive, and avoids the expense of obtaining a more-expensive "full trademark search (including unregistered "commonlaw" rights) from a commercial supplier if the proposed mark is "knocked out" during the preliminary search results.

No international treaty mandates the registration of scent marks. In fact, some treaties, such as Trademark Law Treaty, explicitly state the terms of the treaty do not apply to scent marks. Regarding national laws, some jurisdictions are more tolerant of scent marks than others. For example, the Australian trade-mark statute now expressly contemplates scent mark registration. The Sieckmann ruling has created a contradictory situation in Europe with respect to registration of scents under the European Community Mark (ECM) system. ECM applicants are not barred from applying for scent registrations, but simultaneously do not have readily apparent, acceptable methods to describe scent marks on trade-mark applications. Meanwhile, there are jurisdictions whose laws are silent on the registration of scent marks, such as Canada, and a number of countries (e.g. Brazil, China and Mexico) which forbid scent mark registration.

At one end of the spectrum, so-called "fanciful marks" are the strongest because they consist of made-up words, such as EXXON® for crude oil and KODAK® for photographic cameras. It would be very difficult for an infringe to successfully claim that they need to be able to use even a vaguely similar term in connection with their own products. Arbitrary marks, the next strongest category, use common words to identify and distinguish products that are not normally associated with those products, such as APPLE® for computers, and MARS® for candy.

Suggestive marks are slightly less strong and provide just a hint about the nature of the goods or services, but still require some mental gymnastics to arrive at the connection, such marks would include COPPERTONE® for suntan oil and CHICKEN-OF-THE-SEA® for tuna fish. Descriptive terms, like BANK OF AMERICA® for banking services, are not initially protectible as trademarks, but can ater significant use, become protectible as trademarks if they have developed a "secondary meaning" with consumers to identify the corresponding goods or services.

At the opposite end of the spectrum, so-called "generic terms" can never be protected as trademarks because they signify a class of products, rather than the source or origin of a partiucular product. For example, although Aspirin is a trademark that was originally coined by the Bayer company of Germany for acetylsalicylic acid, in some countries (including the United States) the name is used as a generic term for the drug rather than the manufacturer's trademark. In other countries where Aspirin retains its secondary meaning and therefore still functions as a trademark, the initials ASA are used as the generic term.

According to an October 26, 2004 article in Forbes.com, "The earning power of most deceased people, even famous ones, slows considerably or stops altogether when they die. But for a select few, the pay checks keep coming and some draw even bigger pay-days than when they were alive. The trick? Making sure the songs and images live on, long after the celebrity is gone."

The .net domain was originally intended to serve the techies who operate Web sites, e-mail networks and other online communications hubs. Now it often serves as a second-choice domain for people who cannot get the .com address they want. In contrast, .com has more than 30 million registered addresses while the smaller .org domain -- originally intended for use by nonprofit groups and other organizations -- has about 3.2 million registrations.

Create, or mash-up, a moving image using your favorite moving image authoring tool, such as Flash, iMovie, or Final Cut Pro. Entries can contain video, animated images, text, and audio. You may incorporate other people's work, but only if you have permission or the work is Creative Commons-licensed or public domain. All entries must be submitted by November 1, 2004 and licensed under a Creative Commons license of your choosing by time of entry.

Where to Start Your Art

According to Duke Law School's Center for the Study of the Public Domain, here are a few places you can get materials to work with that are either in the public domain, or licensed under Creative Commons licenses

According to a November 2004 article by John Welch, "One who seeks to
register product configuration trade dress in particular
had better be a good hurdler." If the utilitarian advantages of the configuration or other trade dress are disclosed and/or claimed in a utility patent, or if the applicant has touted such advantages in its advertising, there is little or no chance of proving non-functionality. Even if the functionality hurdle is cleared, the product configuration trade dress applicant must then meet the "heavier" burden of proof that applies to the establishment of secondary meaning for a product shape. Unless the applicant has made a significant effort to promote the configuration as a trademark, there is again little hope that registration can be achieved. Trademark practitioners, given the opportunity, would advise trade dress clients to avoid "touting" advertising and instead to make use of "look for" advertising that emphasizes that the design in question is a trademark.

In Bernhardt LLC v. Collezione Europa USA, the Federal Circuit clarified that "To establish the points of novelty in a design patent infringement action, we hold that the patentee must introduce into evidence, at a minimum, the design patent at issue, its prosecution history, and the relevant prior art references cited in the prosecution history; and must present, in some form, its contentions as to points of novelty.

"The contentions may be made in any appropriate way, such as in proposed findings of fact. The fact finder generally will be able to determine the points of novelty that distinguish the design patent from the prior art by comparing the design patent with the cited prior art references, aided by any written statements of the applicant and examiner in the prosecution history.

"A patentee may seek to present additional evidence, such as expert testimony, to assist the fact finder in understanding its contentions pertaining to the points of novelty, and in some cases presenting thatevidence may be advisable. We hold only that when the points of novelty can be discerned from the patent, its prosecution history, the cited prior art, and the patentee?s contentions, any additional evidence, such as expert testimony, is not necessary to establish the points of novelty."

The complaint requests that an unfair import investigation be instituted involving "Certain Digital Image Storage and Retrieval Devices." The proposed respondents are Eastman Kodak Company of Rochester, New York and its subsidiary, Chinon Industries of Suwa, Japan.

The complaint has been designated as confidential and assigned Docket No. 337-2398 for indexing in the Commission's database. The Commission now has 30-35 days from the filing date of the complaint in which to decide whether to institute the investigation. Upon institution, the proposed respondent will be served with the Complaint via postal mail and an Administrative Law Judge will schedule discovery, conduct a trial, and issue a written "Initial Determination," usually within about 10 months. Due to the expedited nature of these proceedings, and availability of general exclusion orders affecting non-parties, it is important to notify any potential importers of similar products as soon as possible.

Archived
updates for Monday, October 25, 2004

According to an October 22, 2004 article in The Standard, "the Hong Kong Trade Development Council current mechanism for dealing with piracy at its trade fairs bans a company from attending if at least four valid complaints are received within two consecutive fair periods. The complaints can originate from one or more parties and relate to different products 'although, if a company is banned from toy fairs but also makes electronic goods, we cannot also stop it from attending electronics trade shows', the spokesman added."

The Commerce Department?s United States Patent and Trademark Office (USPTO) has expanded its electronic filing tools with the addition of two new electronic forms for filing Trademark Trial and Appeal Board (TTAB) documents on line. One e-form allows parties in opposition and cancellation proceedings to notify the TTAB of an address change. Changes of address submitted electronically automatically update TTAB's electronic records. The other e-form is for certain consented motions in oppositions and cancellation proceedings. When parties use the new e-form to file consented motions to suspend proceedings or to extend discovery and testimony dates, the system will, in most cases, automatically send out a TTAB order to both parties granting the motion.

According to a paper by Raymond Shih Ray Ku, the denial of access to
music may no longer be necessary to prevent the inefficiencies associated with free riding on the investments and efforts of others to distribute music. Consumer copying via the Internet "creatively destroys" the need for copyright's exclusive rights in reproduction and distribution when

the consumer of a work makes copies of it, and

creation of the work does not depend upon funding derived from the sale of copies.

When both conditions are satisfied, copying does not lead to the underproduction of creative works because consumers distribute the work themselves, eliminating the need for content distributor middlemen while continuing to fund the creation of those creative works. Recognizing this process of creative destruction as fair use is not only consistent with an economic interpretation of copyright, but represents the most coherent interpretation of the consumer copying decisions handed down by the Supreme Court.

According toTerrence Maxwell's model (above), any adjustment to the level and degree of copyright protection must be considered in relation to decisions about trade, education, literacy and technology, to achieve and maintain an effective balance between promotion of new knowledge and a healthy public domain. The presence or absence of copyright protection is most critical to the number of authors in a society, but has little effect on publisher expansion and profits, or on consumer prices. In fact, during early stages of development, capital requirements are far more critical to the overall health of a publishing community than copyright or other policy options. Copyright should therefore be viewed in relation to other potential policy options and to the goals we wish to achieve in supporting intellectual production and distribution both nationally and internationally. Current efforts to strengthen copy control over information products in order to keep prices at a level similar to preâ€“digital periods is not necessarily the best policy direction.

According to an unofficial summary of the USPTO's September 28, 2004 Electronic Filing Forum, Director Dudas noted that while e-filing of trademark and patent applications had been available for some years, trademark e-filing was at about 70% while patent e-filing was still only 1-2%. It is thus a very high priority of the Patent Office, the Director explained, to make plans to get the patent e-filing rate up to a comparable percentage.

Participants mentioned several factors as to why they do not e-file, including

fear of malpractice liability due to risk of dropped content in an e-filing,

concern that an e-filing can take hours longer than a paper filing, leading to costs that cannot be passed on to clients, and

frustration with nonstandard data ports used by ePave leading to problems with corporate firewalls.

"The USPTO is urged in the strongest terms immediately to set up a web-based system that would allow a filer to e-file, through a web page, a PDF or TIF copy of what the filer would otherwise have faxed to the central fax number at 703-872-9306. Such a system would be extremely popular with filers on its own terms. Such a system would permit a low-stakes accumulation of experience with PDFs that is not easy to obtain any other way. Such a system permits getting "a toe in the water" for the USPTO regarding web-based filing of PDFs and TIFs and will give objective data as to adoption rates of web-based PDF and TIF filings. . . ."

Archived
updates for Friday, October 22, 2004

According to an October 21, 2004 article from ZDNet UK, "The four main political parties in Germany are supporting the fight against European software patents. . . . The changes proposed by the German parties are that computer programs on their own should not be patented, and that a technical invention must involve a physical change -- not merely a software, business process, algorithms or data processing activity." According to Axel Horn's reading of the Heise Newsticker report, they are promoting a radical cutback of the patentability of computer-implemented inventions by introducing a narrow definition of the concept of "technical contribution.

According to a study by BTI Consulting Group, corporate law departments are using 25 percent to 30 percent fewer law firms than they did three years ago. At the same time, corporate legal staffs have shrunk 40 percent, even as companies shift more work to outside firms.

One common refrain that surveyor Mozhgan Mizban hears from clients is that they want much more than a straight legal adviser. "They want someone who really understands their business," Mizban said to the Recorder.

According to Ralph Savarese in the same article, corporations now also regard law firms the way they do other suppliers of goods and services and want to have more control over their behavior. "Most of the work done for most large companies is not brain surgery but more treating colds, sores, tonsillitis, measles," Savarese said. "When it's brain surgery, they want to go to the surgeon who's done that specific brain surgery 1,000 times and won't ask the cost."

According to an article by Hal Wegner, "Odd quirks in local disclosure requirements geometrically complicate the task for innovative companies who may lose protection in some countries; they otherwise will face mounting costs in tailoring their original applications to meet divergent standards. . . . The major patent granting countries of the world can and should unite to set forth common disclosure standards that can be uniformly and fairly administered by all offices. In this regard, it would be useful to have a protocol to further define compliance with Article 4H [of the Paris Convention]:

For purposes of priority a disclosure in an earlier application shall be deemed adequate where the application documents as a whole specifically disclose the invention; any local country requirement for proof of completion of the invention may not require including such proof in the original application
documents. . . .

[However, s]ince the 1967 Stockholm Revision to the Paris Convention, that treaty has become a part of the United Nations, where every member state has one equal vote. Obviously, with the majority of the United Nations members against a strong patent regime, a significant move to strengthen the patent regime is not a workable option."

Since the Catnic case we have article 69 [of the European Patent Convention] which, as it seems to me, firmly shuts the door on any doctrine which extends protection outside the claims. I cannot say that I am sorry because the Festo litigation suggests, with all respect to the courts of the United States, that American patent litigants pay dearly for results which are no more just or predictable than could be achieved by simply reading the claims.

With regard to the scope of EPC Article 69, Lord Hoffman goes on to write that that

Although the EPC thus adopted the United Kingdom principle of using the claims to determine the extent of protection, the Contracting States were unwilling to accept what were understood to be the principles of construction which United
Kingdom courts applied in deciding what the claims meant. These principles, which I shall explain in greater detail in a moment, were perceived as having sometimes resulted in claims being given an unduly narrow and literal construction. The Contracting Parties wanted to make it clear that legal technicalities of this kind should be rejected. On the other hand, it was accepted that countries which had previously looked to the "essence of the invention" rather than the actual terms of the claims should not carry on exactly as before under the guise of giving the claims a generous interpretation.

This compromise was given effect by the "Protocol on the Interpretation of Article 69":

"Article 69 should not be interpreted in the sense that the extent of the protection conferred by a European patent is to be understood as that defined by the strict, literal meaning of the wording used in the claims, the description and drawings being employed only for the purpose of resolving an ambiguity found in the claims. Neither should it be interpreted in the sense that the claims serve only as a guideline and that the actual protection conferred may extend to what, from a consideration of the description and drawings by a person skilled in the art, the patentee has contemplated. On the contrary, it is to be interpreted as defining a position between these extremes which combines a fair protection for the patentee with a reasonable degree of certainty for third parties."

It used to be thought that despite article 69 and the Protocol, there remained serious differences between the approaches to construction of the United Kingdom on the one hand and Germany and the Netherlands on the other. And it is true that in the early years of the EPC, there was a view in the German and Netherlands courts that the Convention had made no difference and that the Protocol entitled the courts of Contracting States to go on deciding the extent of protection exactly as before. The highest courts in both Germany and the Netherlands have said that the effect of article 69 is to give the claims what the European Patent Office has called a "central role."

A more-detailed story from "The IPKat marvels at Lord Hoffmann's clarity of thought and lucidity of expression. Does anyone in the UK seriously advocate exchanging this sort of quality for an unknown and untried Community patent court?"

According to an October 2004 article by J. Benjamin Bai and Helen Cheng explaining Chinese patent invalidation procedures,

Notwithstanding the political rhetorics about China?s lack of IP protection, it has strengthened its patent system significantly in recent years. Therefore, multinational companies facing patent challenges in China should not operate under the mistaken assumption that foreign companies cannot win in Chinese courts and agencies. In fact, multinational companies have won before the PRB
and in courts in patent invalidation proceedings.

It generally takes about six months to two years in order to a decision from the Chinese Patent Reexamination Board (or "PRB") and the reversal rates are relatively low ? about less than 20 percent. "Therefore, winning before the PRB is more than half of the battle. However, losing before the PRB is not the end of the world either."

According to their website, "Furl is a tool for saving, sharing and finding information (you know, the pages you want to save for future reference but then can never find again). At the core, Furl is a place to store content you find on the Internet and know that you can find it again at any time in the future (i.e. articles, product descriptions, web sites, e-commerce receipts, etc.)."

A free quarterly publication on the Madrid Agreement Concerning the International Registration of Marks and to the Protocol relating to that Agreement, that the International Bureau is making available on-line here, where you can also subscribe to future issues. Here are a few statistics from the inaugural issue.

The largest number of international applications filed in 2003 came from users in Germany (4,999 or 22.9%), France (3,281 or 15%), Switzerland (2,204 or 10.1%) and the Benelux (2,104 or 9.6%). The top twenty users of the Madrid System in
2003 were: Henkel, Sanofi, Unilever, Janssen Pharmaceutica, L?Oréal, Nestlé, Bayer, Novartis, Siemens, ITM, Boehringer, Biofarma, Philips Electronics, BASF, Novartis, Merck, Syngenta, Fiat, Kodak and Bongrain. Moreover the Madrid System is also widely used by SMEs. Among the owners of the trademarks that are internationally registered, more than 90% own less than
10 such registrations.

Data concerning all international registrations currently in force, as well as international applications and subsequent designations received but not yet recorded, are also made available for searching in electronic form on the Internet through the Madrid Express database in WIPO's Industrial Property Digital Library (IPDL) Madrid Express is updated daily.

According to an article in WIPO's October 2004 SME Newsletter by Mario Cervantes, an economist with the Organization for Economic Cooperation and Development, it typically takes 5 to 7 years for a university technology transfer offices ("TTO") just to break even.

While leading universities and public research organizations in countries such as the United States, Germany and Switzerland may earn millions of dollars or euros in licensing revenue, the gains are highly skewed ? a few blockbuster inventions account for most revenue. Furthermore, income from licensing academic inventions remains quite small in comparison to overall research budgets.

Quantitative studies tend to show that patenting has led universities to conduct more applied research. By making university research more responsive to the economy, is there a danger that basic research will suffer? On the one hand, several studies in the United States have found that universities and individual researchers that have seen the largest increases in patenting are also those which experienced the greatest gains in academic publications. On the other hand, the rate at which academic patents are cited in other patents fell (relative to the average) between the early 1980s and late 1990s in the United
States and is now lower than the citation rate of patents granted to business. This could suggest a possible drop in the quality of public research ? or at least of its patented component. Alternatively, it may reflect the inexperience of newly founded technology transfer offices.

According to Malla Pollack of the University of Idaho College of Law, the word "progress" meant "dissemination" in 1789. The original meaning of Article One, Sec. 8, cl. 8, therefore, is that Congress has the right to grant only such temporally limited exclusive rights in writings and new technology so as to encourage the dissemination of knowledge and new technology to the population.

This short article answers the question "How would the United States positive law have differed if the Supreme Court had reached the Progress Clause when its original meaning was still clear?" The author surmises that

'Intellectual property' may never have been born

Copyright and patent would have been viewed as claims for payment, not property rules

Congressional expansions of the term of existing copyrights or patents would be void attempts to take constitutionally-protected rights from the general public

Someone who wishes to enforce his or her copyright in a work should be required
to place a conspicuous notice on every dissemination of the work

The doctrine of infringement by equivalents would not exist

The author concludes that such an interpretation "would revolutionize American 'intellectual property' and, to some degree, First Amendment doctrine by prioritizing people's access to writings and discoveries -- everyday non-intellectual, non-investing, people -- the posterity for whose general welfare and liberty the Constitution was ratified. This is precisely the lesson Professor Balkin learns about free speech principles from the Internet."

The campaign is managed by Florian Müller and is supported by three corporate partners: 1&1, Red Hat, and MySQL AB. "Software patents are used for anti-competitive purposes, stifle innovation, and would cost the entire economy and society dearly", Florian Müller said. "On the bottom line, they create more injustice than justice. There is only a small group of people in the patent system who would benefit from them, and some large American corporations have ulterior motives. The public interest must prevail because every European citizen, every European company and every European government would end up paying a high price for such a monumental mistake."

"In September of this year, the office held a one-day patent electronic filing forum at the new Alexandria headquarters for the USPTO to listen to your e-filing concerns. Electronic filing is going to be critical to the success of our office and our intellectual property system in the future. In attendance, were 39 external customers representing major corporations, major law firms and intellectual property organizations from throughout the country. The purpose of the forum was to allow our stakeholders to give input and help formulate a strategic plan to increase electronic filing by our customers. We heard you tell us three things: make it simple, make it safe, and make it happen.

"You told us to make it simple by developing a fast and secure web-based portal system for e-filing that requires no client software, allows for PDF file formats and e-filing of document types, other than just applications. You told us to make it safe by providing a certificate of e-filing rule change similar to the current certificate of mailing practice, and you told us to make it happen by partnering with our patent and trademark stakeholders to develop an e-filing strategic plan and to maintain the relationship after a new system is in place so future modifications can be made to meet your changing needs.

"The USPTO is working to make it happen right now by scheduling, this month, initial discussion towards the development of a common USPTO web-based portal for patent e-filing with a number of important and potential contractors. With your thoughts, suggestions and ideas, the USPTO will gain the insight we need to make e-filing safe, efficient, widely used and make it a system that you want that you will use."

According to an October 19, 2004 Kyodo news story, Japan and European officials at a two-day China-EU-Japan IP Seminar conference ending Tuesday were urged by China to be patient, because China's 20-year piracy criminal code is young compared with those of Japan and Europe. "There are many problems yet to be addressed, but the Chinese government knows and is doing something," reportedly said Li Ling, director general of the Commerce Ministry's Treaty and Law Department.

The budding World Intellectual Wealth Organization (d/b/a Free Software Foundation Europe) is "convinced that new answers sometimes require new questions, not more careful repetition of old questions. A World Intellectual Property Organisation will always, understandably, lean towards applying the pre-selected tool-set of monopolisation that it refers to as Intellectual Property; a term that we find to be ideologically charged and dangerously oblivious to the significant differences that exist between the many areas of law that it tries to subsume."

They "endorse and support the Geneva Declaration, and invite its drafters, signatories, and the United Nations to start thinking now not only about what the role of WIPO should be, but rather what kind of organisation we need in its place."

In its place they suggest "a World Intellectual Wealth Organisation, dedicated to the research and promotion of novel and imaginative ways to encourage the production and dissemination of knowledge. Granting limited monopolies and limited control over some kinds of knowledge may be part of this new organisations tool-set, but not the only one, and maybe not even the most important one."

Archived
updates for Tuesday, October 19, 2004

When Dutch civil rights organization Bits of Freedom posted a public domain text on websites with ten different Dutch internet service providers and then e-mailed copyright infringement notices under the name of an imaginary copyright holder, 7 out of 10 ISPs took down the material, sometimes within hours and without even informing the account holder. Their report compares the European E-Commerce Directive with the American DCMA Safe Harbor Provisions and concludes that "It only takes a Hotmail account to bring a website down, and freedom of speech stands no chance in front of the Texan-style private ISP justice."

According to an October 18, 2004 press release from Business Wire, SanDisk has initiated paralell infringement proceedings. The complaint with the ITC seeks an investigation as to whether NAND flash memory chips manufactured by STMicroelectronics and its subsidiaries and sold in the United States infringe SanDisk's United States Patent No. 5,172,338 and requests that ST's NAND flash memory chips be barred from sale in the United States. The parallel action in the United States District Court for the Northern District of California involves the same patent and also seeks an order declaring that SanDisk's products do not infringe fourteen patents assigned to STMicroelectronics and/or that those patents are invalid.

The ITC complaint has been designated as confidential and assigned Docket No. 337-2397 for indexing in the Commission's database. The Commission now has 30-35 days from the dates indicated above in which to decide whether to institute the investigation. Upon institution, the proposed respondent will be served with the Complaint via postal mail and an Administrative Law Judge will schedule discovery, conduct a trial, and issue a written initial determination, usually within about 10 months. Due to the expedited nature of these proceedings, it is important to notify any interested parties as soon as possible.

USPTO Independent Inventors OnLine Today

The USPTO's next online for independent inventors will be Tuesday, October 19 at 2 pm. In response to some of the more complicated technical questions, that they have received in the past, the format will change this month. USPTO experts will take more detailed questions for a half hour, but will not answer them until later. The answers to the questions will be posted on the USPTO website as soon as possible following the October 19, 2004 online.

This new format will alternate each month with the normal interactive online that has been used in the past.

The settlement, which was approved by Federal District Court Judge William C. Conner on October 15, 2004, reportedly provides stations with the right to perform ASCAP music over the air and also as part of a simultaneous stream of their over-the-air signals on their Internet web sites. "Over $1.7 Billion dollars, fixed through 2009, indicates the true economic value of our members' music to the radio industry," said ASCAP's Director of Licensing Vincent Candilora. "We were pleased to have reached an agreement that establishes significant income increases for our members that they can count on well into the future, and provides the radio industry with the planning information and simplified administration it views as critical for business success."

According to the RMLC website, "Eliminating the revenue-based music licensing system has been an important objective of the industry for many years, and with this agreement we have now succeeded in eliminating the revenue-based system from licenses with both of the major performing rights organizations, ASCAP and BMI. The ASCAP allocation methodology tracks the methodology that was employed in the BMI license agreement reached last year."

As reported on October 15, 2004, in Socialiast Worker Online, "Studies suggest that not only does downloading not hurt music industry sales, but it may actually help them. During a 17-week period in 2002, professors from the Harvard Business School and the University of North Carolina looked at 1.75 million downloads, and compared them to album sales. According to Harvard professor Felix Oberholzer-Gee, 'We just couldn't document a negative relationship between file sharing and music sales.' In fact, for the most popular albums--the top 25 percent that had more than 600,000 sales--the study found that file sharing actually boosted sales."

Felix Oberholzer and Koleman Strumpf state in the conclusion totheir March 2004 study that "File sharing has no statistically significant effect on purchases of the average album in our sample. . . . Based on our results, we do not believe file sharing will have a significant effect on the supply of recorded music. . . . If we are correct in arguing that downloading has little effect on the production of music,
then file sharing probably increases aggregate welfare. Shifts from sales to downloads are simply transfers between firms and consumers. And while we have argued that file sharing imposes little dynamic cost in terms of future production, it has considerably increased the consumption of recorded music. File sharing lowers the price and allows an apparently large pool of individuals to enjoy music. The sheer magnitude of this activity, the billions of tracks which are downloaded each year, suggests the added social welfare from file sharing is likely to be quite high.

research and technology at the atomic, molecular or macromolecular levels, in the length of scale of approximately 1-100 nanometer range in at least one dimension, and that provide a fundamental understanding of phenomena, and

materials, structures, devices, and systems that have novel properties and functions because of their small and/or intermediate size.

EmailStripper is a free program for cleaning the ">" and other formatting characters out of your emails. It will restore "forwarded" or "replied" emails back to their original state so they're easier to read.

According to a post by Mike Phillips on the EFS Discussion list, it can also be used to reduce all text to pure ASCII, thereby removing all formatting codes. Just paste text into the window and then copy it back to the clipboard without pressing the Strip It! button. "No formatting codes can survive the transition," writes Mike.

Archived
updates for Monday, October 18, 2004

EFS-ABX is the Patent Application specification authoring component of the EFS software suite from the USPTO. According to their website, EFS-ABX allows the user to author electronic (XML and PDF) versions of specifications in "an easy to use Microsoft Word template." However, according to a posting to the EFS discussion list allegedly by Daima T. Phipps, "the best way to author an ABX specification is to follow these steps:

Create your Word document.

Remove any unnecessary formatting such as automatic paragraph or
claim numbering by converting to text (this may be done in a number of ways)

Ensure headings are formatted alike.

Ensure paragraphs are formatted alike.

Make images of tables with merged cells and remove them from the
Word document.

Go through to each heading in the document and Format as Heading
from the Description tools.

Insert table images when applicable. (multiple images may be inserted all at once - great time saver but double check the order in which they appear).

Go through and apply paragraph and claim numbers to the rest of the specification.

Attach drawings using the Drawing tools. (here too multiple images may be inserted at once, but double check the order in which they appear, may be better to insert one at a time.)

Save specification.

Export.

As long as you apply section headings first, then format existing headings you should not run into problems with validation, therefore that step can be skipped. Remember that a paragraph must appear after a heading and that you cannot start a bullet or numbered list directly after a heading. To help alleviate problems with how the sections separate, insert an extra paragraph return (or two) between sections."

The free Firefox browser now includes "Live Bookmarks" RSS support. According to their website:

Live Bookmarks is a new technology in Firefox that lets you view RSS news and blog headlines in the bookmarks toolbar or bookmarks menu. With one glance, quickly see the latest headlines from your favorite sites. Go directly to the articles that interest you -- saving you time. A site is enabled for Live Bookmarks when you see this icon on the bottom right corner of the browser. Clicking on the icon and selecting an RSS feed will bring up the Add Bookmark dialog. Select 'OK' and you will see Live Bookmarks with the rest of your bookmarks. Many people find it especially convenient to save Live Bookmarks in their Bookmarks Toolbar folder.

The "procedural" approach starts with a general presumption in favor of the ordinarily understood meaning of claim language, typically drawn from a relevant dictionary, reference works, or common usage. It then follows a predetermined path of analysis, wherein any suggested alteration from the ordinary meaning must be accompanied bysignificant proof that such an alteration is required under the circumstances.

The "holistic" methodology, on the other hand, adopts a distinctly more free-form approach, seeking the correct meaning according to the particular circumstances presented, rather than following the formal steps and hierarchy of information sources seen in the procedural method. The holistic approach is significantly more relaxed than the procedural method in moving away from the abstracted "ordinary meaning" of a term in favor of a more localized understanding.

The authors conclude that the CAFC used a procedural methodological approach in 63.1% of the decisions between April 1996 to November 2002 and a "holistic" methodological approach in the remaining 36.9%. Furthermore, as shown below, during this period, the procedural methodological approach became more prevalent.

They attribute this trend to a substantial increase in authorship activity among judges whose statistical profile indicates a strong preference for the procedural methodological related to the addition of new judges to the Federal Circuit in 2000.

"Claim construction analysis at the Federal Circuit is clearly affected by the composition of the panel that hears and decides the case," they write. So much so that the authors have developed "The Federal Circuit Predictor" tool which upon entering the identity of the three-judge panel will return the (statistically) most likely methodological form of claim construction opinion that the panel will issue. Here is a quick summary of the "holistic probability for each Federal Circuit Judge:

In Irdeto Access, Inc. v. Echostar Satellite Corp., Fed. Cir., No. 04-1154, September 14, 2004, Judge Michell wrote that where the applicant admitted that certain claim terms lacked any agreed upon meaning in the art -- i.e., ordinary meaning -- and unequivocally directed the patent examiner to the specification as the complete source of meaning for the disputed terms, the patentee?s clear intent to rely on the four corners of his patent to define fully the terms at issue takes the case out of the "heavy presumption" (procedural) regime with regard to the meaning of the terms at issue.

And while the specification does not contain any statements of explicit disavowal or words of manifest exclusion, it repeatedly, consistently, and exclusively uses "group" to denote fewer than all subscribers, manifesting the patentee?s clear intent to so limit the term. The specification also contains no affirmative indication that group can consist of all subscribers within the system. A reasonable competitor reading the patent could only understand "group" to refer to a subset of all subscribers. The claims must be limited accordingly.

According to an article by Marc J. Pernick, Robert F. Kramer, David Horton and Marisa Fortunati on October 8, 2004, the majority of the amici briefs in the en banc rehearing of Phillips v. AWH are urging the court to interpret claim terms by looking primarily to the patentee's use of the terms in the specification and prosecution history and secondarily to dictionaries and similar sources if useful. The majority also advocated allowing expert testimony to play at least some role in claim construction. Further, most of the amici urged the Federal Circuit to accord deference to varying aspects of trial court claim construction rulings, rather than review these findings entirely de novo.

The new Restored Names Accuracy Policy tales effect November 12 and requires that a domain name that was deleted due to the submission of false contact data or lack of response to a registrar's inquiries and is subsequently restored during the redemption grace period must be placed on hold until the registrant has provided updated and accurate Whois information. However, the policy does not require registrars to verify the accuracy of the newly submitted Whois data, and thus the impact of this policy remains to be seen.

The new Whois Marketing Restriction Policy, also taking effect on November 12, requires registrars' bulk access agreements to prohibit the use of Whois data to support any marketing activities, and/or the redistribution of Whois data unless it has been incorporated into a product or service that does not permit extraction of a substantial portion of the data.

On December 21, 2004, a new Expired Domain Deletion Policy will also go into effect. Among other things, it defines the "extenuating circumstances" that will otherwise prevent a domain name from being deleted within 45 days of either the registrar or the registrant terminating a registration agreement.

Inaccurate WhoIs data that is reported through InterNIC's Whois Data Problem Report System is forwarded to the appropriate registrar which must then take "reasonable steps" to correct the inaccuracy. While some questions remain about what is "reasonable," the system at least provides a venue for filing a complaint and monitoring a registrar's response.

According to tradition, San Marino was founded in AD 301 when a Christian stonemason named Marinus the Dalmatian fled from the Dalmatian island of Arbe to escape the anti-Christian Roman Emperor Diocletian. Marinus hid on the peak of Mount Titano (the highest of San Marino's seven hills) and founded a small community following Christian beliefs. The owner of the land, a sympathetic lady of Rimini bequeathed it to the little Christian community. It is certain that the area had been inhabited since prehistoric times, although evidence of existence on Mount Titano dates back only to the middle ages. In memory of the stonecutter, the land was renamed "Land of San Marino," and was finally changed to its present-day name, "Republic of San Marino."

The land area of San Marino consisted only of Mount Titano until 1463, at which time the republic entered into an alliance against Sigismondo Pandolfo Malatesta, Lord of Rimini, who was later defeated. As a result, Pope Pius II gave San Marino the towns of Fiorentino, Montegiardino, and Serravalle. Later that year, the town of Faetano joined the republic on its own accord. Since then, the size of San Marino has remained unchanged.

In sports, the San Marino national football team has won only one international game, a 1-0 win over Liechtenstein in 2004. Despite the lack of success at international level, San Marino holds the record for the fastest ever goal in World Cup history. In a World Cup qualifier against England in 1993, David Gualtieri scored after just 8 seconds. However, San Marino went on to lose the match 1-7. Alas, even the world famous San Marino Grand PrixFormula One race actually takes place at the Enzo e Dino Ferrari racetrack in the Italian town of Imola, about 100 km northwest of San Marino, along the Via Emilia.

"Idea cradle provides tools to fund and manage a project co-operatively. Browse the ideas and when you find an idea you like, just click to support it. Support is free, and shows your intention to contribute when there are enough supporters. Ideas with enough supporters get funded and become co-operatives controlled by the vote of the supporters.

Why use idea cradle ?

for charity - make donation personal by tying it to a specific project the donor has control of- build relationships and engage donors to educate and promote

for co-operatives - democratically participate in a co-operative on the web with meetings, newsletters, elections, polls

for open source - start user based software bounties- manage development and implementation

for creative minds - publish an idea and use our tools to raise funds and build community starting today

Last week, they also launched Google SMS. It's a way to access Google for precise information from your mobile phone or handheld device (like a BlackBerry). According to their website, here is how you use it --

Archived
updates for Thursday, October 14, 2004

"If you do business in China, you should assume that your designs and products can and will be copied" says Patrick Powers of the US-China Business Council. "China is at least a decade away from anything close to the level of IP protection we have in the U.S.," says says James Mulvenon, deputy director of the center for Asia-Pacific policy at the RAND think tank. Then how can electronics firms protect themselves, you ask? According to Electronic Business Online, firms should

In broad terms, "injunctions" prevent or to stop alleged infringements of rights, while "preliminary attachment" preserves evidence of infringement. Sometimes a party has been petitioned for preliminary attachment of evidence, but the court made rulings for both injunctions and evidence attachment, thus going beyond the scope of the petitioner's request. In other cases, one ruling was made for both coercive measures.

There are major differences between injunctions and attachment measures. Firstly, the former is a measure adopted when infringements of intellectual property rights are being committed or threatened, while the latter is adopted in order to secure satisfaction of the judgment. Secondly, the former is directed against infringing acts and infringing products, while the latter is the seizure of disputed property. Thirdly, the former cannot be lifted even if the respondent offers a counter bond, while the latter should be vacated when the respondent posts a bond. Finally, the former cannot be adopted without a petition by the party concerned, while the latter can be adopted in the absence of a petition if the court deems it necessary.

"Preliminary execution" is yet another term that refers to a ruling made by the court with respect to the petition of one party, after the filing of a civil case but before the final conclusion of such a case, for requesting the other party to pay a certain sum of money to the petitioner or to perform or stop performing certain acts. There are also major differences between injunctions and preliminary execution. For instance, the former is adopted in order to stop infringement of intellectual property rights, while the objective of the latter is to press for payment, in emergency cases, of alimony, cost of upbringing, educational expenses, pension for the disabled or for the family of the deceased, or remuneration for work done. Another example is that the former is adopted when infringing acts are being threatened, while with the latter the focus of consideration is on the facts that there is a clearly defined relationship of rights and obligations between the parties, that the petitioner's life or production and business operation will be seriously affected without adoption of such measures, and that the respondent has the ability to perform the obligations.

It usually takes the administrative Authority for Industry and Commerce (or AIC) around three months to complete discovery and issue a decision. Criminal sanctions are also available for counterfeiting registered trade marks.However, if the case is complicated, the administrative process could take more time. Although the requesting party does not need to pay any official fee for a seizure action, disbursements such as travelling fees and transportation fees for transmitting the infringing products will be charged.

It usually takes the court of first instance, after docketing the complaint, around six to 12 months to issue a judgment. Any appeal usually takes half of the time of the first instance. Court costs depend upon the amount of damages to be claimed from around Rmb1,000 ($120) for no damages and about Rmb10, 010 ($1200) if Rmb1,000,000 ($120,000) in damages is claimed. Court costs may also include other items, such as the fees for auditing or identification if requested.

IP rights can also be recorded with the Chinese General Customs Office for extendible periods of 10 years during which the owner which request Customs to take measures to exclude infringing imports. However, "The detailed procedure for submitting the guarantee shall be promulgated by the General Customs Office at later date."

According to a September 2004 article from NERA Consulting, companies in Japan, including U.S. corporations that operate in Japan, should understand the valuation concepts and the various methods to determine reasonable remuneration for employee inventors. The "profit share" method factors total benefit, return for exclusivity and patent contribution into the calculation, while the "royalty share" method only considers royalty revenue.

The authors explain the complications and complexities resulting from each method of calculation. They conclude that companies should have appropriate rules and methods in place for calculating the value of inventions at the time of the transfer of rights to avoid unnecessary conflict with employees as well as the potential uncertainty that will likely continue to accompany court-dictated awards.

Click here for an interview with Chris Cabou, General Counsel of GE Global Reseach, on the peculiarities of managing patent work for operations in upstate New York; Bangalore, India; Shanghai, China; and Munich, Germany.

Access to the files and greater participation can be key factors in getting good criminal results because the rights holders? counsel often comes armed with a greater grasp of the individual case facts and relevant IP law than many judges and prosecutors, who may be under heavy docket pressures or have little experience handling IP cases."

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